Intellectual Property Attorney

Trademark Applications as Product Predictors

Will Smith – A Case Study in Trademark Applications as Product Predictors:

We recently wrote a blog article entitled The Fresh Prince® of Bel Air – New Licensing (and a Possible Reboot?). In that article, we examined several recent U.S. federal trademark applications filed by  F.P. Trademark Holdings, LLC – which we believed was Will Smith’s company – to opine that Will Smith was in the process of launching an expanded FRESH PRINCE® merchandizing campaign (or, perhaps, even a reboot of his popular television program).

It appears that some of our predictions have come true. Earlier this month, Will Smith announced a limited edition run of FRESH PRINCE® brand clothing on his Instagram account. As shown below, Will Smith’s Instagram® post features a video of himself customizing a t-shirt using thermal technology.

As of this article’s publication, Will Smith’s post had been viewed nearly 4 million times.

This example from Will Smith illustrates an important point: trademark applications can sometimes give insight into a company’s anticipated business decisions. When companies plan on launching a new product line, they naturally want to proactively secure trademark protection, e.g., through filing an intent-to-use trademark application. Accordingly,  since U.S. trademark filings become publicly searchable after a few days, merely filing an application in the U.S. can “leak” news of a product’s future launch before a company is ready to make an announcement.

Negative Consequences of Trademark Application Filings:

Significantly, the “leak” of news of a company’s intentions can have a harmful impact on a company. As one example, a trademark application could give competitors advance notice of a new product line (giving competitors more time to begin making competitive products).

As another example, predicting new product lines using trademark application can have a negative impact on publicly traded companies – giving “fuel” to stock speculators which might have a negative impact on a company’s stock prices.

As yet another example, information pertaining to the filing of a new trademark application in the U.S. can result in the filing of one or more foreign applications by trademark squatters.  Unfortunately, U.S. trademark owners have had their efforts to protect their marks in other countries – most notably, China – stymied by the preemptory filing of applications by scurrilous trademark squatters who are all too happy to transfer the registrations they’ve obtained to the rightful trademark owner – for a price!

Using Foreign Trademark Applications to Hide a New Product Launch:

To combat such negative consequences, large companies have taken advantage of Section 44(d) of the Trademark Act, 15 U.S.C. § 1126(d), which allows applicants to claim priority to foreign trademark applications filed within six months of the U.S. application. In doing so, companies – including U.S. companies – have filed trademark applications in countries which do not have publicly searchable trademark application databases. For example:

  • Google filed an application for GOOGLE CHROMECAST (U.S. Reg. No. 5546115) on July 24, 2013 claiming priority to an application filed in Tonga – a small Polynesian Kingdom and archipelago in the South Pacific – which was filed on June 5, 2013; and

Such a strategy should be carefully executed under the guidance of a competent trademark attorney – especially since this process involves complications such as filing the U.S. application using multiple filing basis.

Bottom line: if a company has an important upcoming brand which needs to be simultaneously protected while remaining secret, filing a foreign trademark application might be worth exploring.

If you or your business are interesting in using a foreign trademark application to maintain the secrecy of a forthcoming U.S. brand, call us today for a free consultation.

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